Sunday, September 30, 2018

Aman Gebru: Compelling Disclosure of Traditional Knowledge in Patents

Aman Gebru, visiting assistant professor at Cardozo Law, has a new article forthcoming in Denver Law Review about patenting traditional knowledge. Aman is on the teaching market this year in the patents and intellectual property field, but his research and teaching deal with other areas as well like contracts and international law. His proposal, if adopted, could be good for the public and some communities, but might make big pharma a bit angry.

So-called traditional knowledge is a term of art. Gebru defines it as the "know-how, skills, innovations, and practices of indigenous peoples and local communities." This is often referred to colloquially as “traditional knowledge” or “TK."  (5). One of the big issues in the international human rights community and the TK literature is whether it is fair for big U.S. companies to extract information from local communities that they then go on to patent and commercialize in products like pharmaceutical drugs, generally without compensation or attribution.

Gebru taps into the literature on “information-forcing” in contract law to argue, I think quite effectively, that the patent office should compel disclosure of any "substantial" reliance by the patent applicant on traditional knowledge.

He argues benefits of compelling disclosure would be two-fold.

First, compelling disclosure of traditional knowledge in patents would increase the quality of patent disclosures. As with the (dying) best mode requirement of Section 112, forced disclosure of traditional knowledge would provide more information to the public regarding how the invention works. This is particularly important, Gebru argues, for traditional knowledge that is not otherwise documented and may remain to large degree tacit, trapped in the minds of the people who utilize it.    

Second, he argues that compelling disclosure of traditional knowledge would benefit researchers, the source community, and the public by addressing mistrust between parties and encouraging collaborative research.
The past experiences of researchers accessing TK, developing products, and failing to recognize the contributions of the source community have created significant trust issues.Decades of alleged biopiracy have made source communities hesitant to share their resource. To overcome this mistrust, a robust and clear signal of change from the status quo is needed.  

Essentially, compelling disclosure of traditional knowledge would signal to the public, and to potential commercializers, that there may be more information available within the local community from which the traditional knowledge was derived. And it would signal to local communities that they are a part of the system.  Companies seeking information would receive assistance to "transcend the tacit dimension." Local communities would gain the opportunity to engage in consulting or licensing of their knowledge to commercializing companies.

At a broader level, the paper attempts to develop more of a welfare-based justification for recognizing the contributions of traditional knowledge to innovation. The justifications predominantly used in the literature are equity and distributive justice. Gebru's argument for compelling disclosure is based on the notion that this could ultimately improve innovation, as well as combating inequality and access issues. In this sense, his arguments parallel some of Madhavi Sunder's work about the potential benefits of IP systems for indigenous communities.

I also saw a third benefit to compelled disclosure of TK. Since the AIA, prior art that once fell into the category of "known or used by others in this country" prior to the invention date has been substantially expanded. Now prior art that is in "public use" or "otherwise available to the public" anywhere before the filing date qualifies to invalidate a patent on novelty and non-obviousness grounds. The patent office will have no realistic way of obtaining this new corpus of prior art without more disclosure from applicants. Traditional knowledge would seem to be a huge area where this information asymmetry could occur.  So forcing disclosure would solve a novelty check problem as well.

This third public benefit leads to a potential pitfall: resistance from the patentee community. If prior art is now open to public uses outside as well as inside this country, they might ask, why should we now also be compelled to disclose this information to the patent office? Let the examiner, and eventually infringers in court, find it themselves.

I enjoyed hearing Gebru speak on this paper, and really look forward to more of his work.

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